MASTEC North America, Inc. v David Henderson, kat williams, Johnson

WIPO Case No. D2024-2691

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

MASTEC North America, Inc. v. David Henderson, kat williams, Johnson
Scarlett, Name Redacted

Case No. D2024-2691

1. The Parties

The Complainant is MASTEC North America, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.

The Respondents are David Henderson, United States, kat williams, United States, Johnson Scarlett, United

States, and Name Redacted.[1]

[1]The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential

2. The Domain Names and Registrars

The disputed domain names <mastecco.com> and <mastecgrp.com> are registered with NameSilo, LLC.

The disputed domain names <mastecelectric.net> and <procurement-mastec.com> are registered with

Hostinger Operations, UAB.

The disputed domain name <mastecelectric.com> is registered with NameCheap, Inc. (altogether the

“Registrars”).

3. Procedural History

The Complaint regarding the disputed domain names <mastecelectric.net>, <mastecelectric.com>,
<mastecco.com> and <mastecgrp.com> was filed with the WIPO Arbitration and Mediation Center (the
“Center”) on July 1, 2024. On July 2, 2024, the Center transmitted by email to the Registrars a request for
registrar verification in connection with the disputed domain names. On July 2 and 3, 2024, the Registrars
transmitted by email to the Center their verification responses disclosing registrant and contact information

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for the disputed domain names which differed from the named Respondents (Redacted for Privacy, Privacy
Service Provided by Withheld and Domain Admin, Privacy Protect, LLC) and contact information in the

Complaint.

The Center sent an email communication to the Complainant on July 3, 2024, with the registrant and contact
information of nominally multiple underlying registrants revealed by the Registrars, requesting the
Complainant to either file separate complaint(s) for the disputed domain names associated with different
underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity
and/or that all domain names are under common control. The Complainant filed an amended Complaint on
July 4, 2024, and requested to include the disputed domain name <procurement-mastec.com> to the
proceeding. On July 4, 2024, the Center transmitted by email to the Registrar Hostinger Operations, UAB, a
request for registrar verification in connection with the disputed domain name. On July 5, 2024, the Registrar
transmitted by email to the Center its verification response disclosing registrant and contact information for
the disputed domain name which differed from the named Respondent (Domain Admin, Privacy Protect,
LLC) and contact information in the Complaint.

The Center sent an email communication to the Complainant on July 9, 2024, providing the registrant and contact information disclosed by the Registrar in relation to the disputed domain name <procurement- mastec.com> and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on July 10, 2024.

The Center verified that the Complaint together with the amended Complaints satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the
Complaint, and the proceedings commenced on July 17, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was August 6, 2024. The Respondents did not submit any response.

Accordingly, the Center notified the Respondents’ default on August 12, 2024.

The Center appointed Evan D. Brown as the sole panelist in this matter on August 26, 2024. The Panel finds
that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a publicly traded infrastructure construction company operating across a range of
industries. It owns the mark MASTEC which it asserts that it has used for more than 80 years, and for which
it enjoys the benefits of registration in the United States (e.g., Reg. No. 2130081, registered on January 20,
1998). The Respondents have used the disputed domain names to impersonate the Complainant and its
employees by creating fraudulent email addresses to send fraudulent messages to customers of the
Complainant. Also, the disputed domain name <mastecelectric.com> was redirecting to the Complainant’s
website at “ the disputed domain name <mastecgrp.com> displayed a Pay-Per-Click
(“PPC”) links page and the disputed domain names <mastecelectric.net>, <procurement-mastec.com>, and
<mastecco.com> did not resolve to an active page.

The disputed domain name <mastecco.com> was registered on February 29, 2024, the disputed domain name <mastecgrp.com> on April 16, 2024, the disputed domain name <mastecelectric.com> on April 18, 2024, the disputed domain name <mastecelectric.net> on May 10, 2024, and the disputed domain name <procurement-mastec.com> on June 25, 2024.

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5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Matter – Consolidation of Multiple Respondents

There are four named Respondents. The Complainant requests that all four be consolidated into this matter.
Consolidation is proper, so the Complainant’s request for consolidation is granted.

Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents and provides that where a complaint is filed against multiple respondents, panels consider whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties.

The record indicates the disputed domain names are under common control. The following facts support this conclusion:

(1) all five disputed domain names were used to send similar phishing emails impersonating employees of

the Complainant,

(2) the <mastecelectric.com>, <mastecelectroc.net>, and <procurement-mastec.com> disputed domain
names were all used to create email addresses and send phishing email messages impersonating the same

employee of the Complainant;

(3) <mastecelectric.com>, <mastecelectric.net>, and <procurement-mastec.com> share the same Registrant

email address;

(4) <mastecelectric.net> and <procurement-mastec.com> share the same Registrant information;

(5) <mastecelectric.com> was registered through the registrar NameCheap , Inc. and NameCheap , Inc.

email service was used for <mastecgrp.com>,

(6) both the <mastecgrp.com> and <mastecco.com> disputed domain names were registered through

NameSilo, LLC.;

(7) both the <procurement-mastec.com> and <mastecelectric.net> were registered through Hostinger

Operations, UAB.; and

(8) all five of the disputed domain names were registered within a four-month period.

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The Respondents have not presented any arguments as to why consolidation would be unfair or inequitable. here.

B. Identical or Confusingly Similar

This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain names are identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview 3.0, section 1.7.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the
MASTEC mark by providing evidence of its trademark registrations. See WIPO Overview 3.0, section 1.2.1.

The disputed domain names incorporate the Complainant’s MASTEC mark in its entirety. This is sufficient for a finding of confusing similarity under the Policy. Accordingly, the Panel finds that the Complainant has established this first element under the Policy.

C. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant).

On this point, the Complainant asserts, among other things, that (1) the Respondents are not commonly known by the disputed domain names, (2) the Respondents have not been authorized, licensed or otherwise permitted to register or use the disputed domain names, (3) the Respondents are not making a protected or noncommercial or fair use of the disputed domain names, and (4), the Respondents have not operated any bona fide or legitimate business under the disputed domain names. Instead, the Respondents are using the disputed domain names to send phishing emails.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent's favor. The use of a domain name for illegal activity such as impersonation or passing off, can never confer rights or legitimate interests on a respondent. Société des Produits Nestlé S.A. v. Great Homes, jobs-nestle.com, WIPO Case No. D2024-2911; WIPO Overview 3.0, section 2.13.1.

Also, the Panel considers that the composition of the disputed domain names carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

D. Registered and Used in Bad Faith

The Complainant has provided evidence that the disputed domain names were used for fraudulent activity
(sending phishing email messages). On the uncontroverted evidence before this Panel, the disputed domain
names were used to impersonate the Complainant and to send messages to customers of the Complainant.
This Panel finds that on the balance of probabilities the disputed domain names were registered and are
being used in bad faith for the purposes of unlawful phishing activity. See The PwC Business Trust and
PricewaterhouseCoopers LLP v. Franck Profirst, WIPO Case No. D2021-1057.

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In addition, panels have found that a respondent redirecting a domain name to a complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant.

The fact that some of the disputed domain names resolve to inactive sites, in these circumstances, does not
prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the

WIPO Overview 3.0.

The Complainant has therefore also succeeded in satisfying this third and final element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain names <mastecco.com>, <mastecelectric.com>, <mastecelectric.net>,

<mastecgrp.com>, and <procurement-mastec.com> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: September 10, 2024

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v.
FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.